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21 June 2011

Negotiating a Copyright Licence with Copyleft Terms

Traditional copyright licences are almost invariably used by lawyers to grant rights in works of art although, increasingly, artists have begun to license their works under various Creative Commons licences. Unfortunately, having been taught only about traditional models of copyright, few lawyers are aware of the implications of CC or other copyleft licences. The result is that not only do licence negotiations tend to focus on non-essentials, but they also involve not retaining rights which should/would ordinarily have been retained by the licensee/licensor.

Clause 3 of each of these contracts grants licensees worldwide, royalty-free, non-exclusive, perpetual licences while the fourth clause of each contract restricts the rights granted. All rights not expressly granted are reserved by the licensor, and, Clause 7 of each contract provides for the automatic termination of the relevant licence upon any breach of its terms attributable to the licensee. Also, share-alike terms are not optional in the Indian CC licences: Clauses 8 of these licences, inter alia, state:

Each time You distribute or publicly digitally perform the Work or a Collective Work, the Licensor offers to the recipient a license to the Work on the same terms and conditions as the license granted to You under this License.

Each time You distribute or publicly digitally perform a Adaptation, Licensor offers to the recipient a license to the original Work on the same terms and conditions as the license granted to You under this License.

Remarkably, the licences do not appear to confer exclusive jurisdiction on Indian courts: they merely state that 'parties hereto submit and agree to the jurisdiction of the Indian courts' in Clauses 8(h).

These contracts are structured in exactly the same manner as traditional copyright contracts may be structured; they're being copyleft only means that their terms may be considered to be more 'liberal'.

The inclusion of copyleft terms in a copyright licence may, however, necessitate the inclusion of terms like those pertaining to 'exclusive first use' which are not ordinarily included in such licences.

In an interesting post, Nina Paley described her experience negotiating a contract with a museum for art works; the art was to be licenced under a copyright licence which allowed for the publication of the art under copyleft licence as well -- specifically, a Creative Commons licence requiring attribution, allowing for commercial use as well as non-commercial use, and containing share-alike terms (i.e. a CC-BY-SA licence). However, during the course of the negotiation, she found that the museum had failed to focus on what it required. And, as it transpired, the CC-BY-SA licence was all that ensured that the work ultimately reached the public.

The story went like this:

Nina Paley was asked to create a set of 11 iconic Vishnu avatars for an exhibit the Brooklyn Museum had planned. The museum and Ms Paley verbally agreed that she would be paid an honorarium, and that the images would be licensed under a CC-BY-SA licence.

However, after she refused to revise her work, the museum produced a contract which allowed it to require unlimited revisions of her. Since the work was, by that time, complete and licensed under the CC-BY-SA licence, Ms Paley pointed out that they could use it without even paying her. Instead of doing so, the museum removed the revisions clause, and inserted a non-compete clause. As Ms Paley pointed out, such a clause would have made her work free-to-use for ‘everyone in the entire world’, except herself. Not surprisingly, she did not agree to non-compete clause.

However, Ms Paley did not publish the images during this period so that the museum could have first use, which, as she explained, “...bestows such a competitive advantage that copyright is irrelevant. If the Museum rolled out merchandise first, any potential competitors would be unlikely to catch up. The work would immediately be associated with the Museum, before any competitor could associate it with anything else. Any sane contract would have obligated me to grant them first use, but that wasn’t in their contract at all, even though the Free license was. Their contract was built on the assumption of copyright, just with a CC-BY-SA license inserted into it. .... The non-compete clause was pointless, but a first use provision would have been essential for them.”

Ultimately, the contract was signed — the museum agreed to the deletion of the non-compete clause and paid Ms Paley more than the agreed honorarium. In a final twist to the story though, the art was dropped from the museum’s exhibit. Only the inclusion of the CC-BY-SA licence allowed it to be published — without the inclusion of the CC-BY-SA licence (or some other licence with comparable provisions), under the terms of a standard copyright licence, the art could well have perished in one of the museum’s warehouses without anyone having been able to see it.

Nina's written about the interpretation of the word 'free' in the comments. The debate about what the word means is interesting and, taking her concerns into account, this post has been revised to specify, in each place where it was referred to, that the licence Nina has used is a CC-BY-SA licence.

However, in this post, the word 'free' has been used to mean nothing more than that 'contractually permitted use does not require the payment of licence fees/royalties'. Pertinently, even this definition may be too broad to be accurate: the CC 3.0 generic licences, for example, specifically allow authors to collect statutorily non-waivable payments due to them, even though the licences are intended to allow use which is free (of payment).

Although I can relate to those who word 'free' to refer to both use and payment, I am extremely apprehensive about doing so simply because I would hate to have to interpret a contract which allowed 'free use', simply because I don't believe it would be difficult to absolutely certain to know what the licensor meant especially in the case of standard form contracts. As a corollary, to my mind, 'free use' and much other copyleft is extremely unclear -- more on this here -- although, of course, I may be prejudiced because of spending a great deal of time trying to interpret virtually incomprehensible contracts.

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